How to file a patent application in India

Filing of patent application

Every application for a patent shall be for one invention only and shall Section 7, be filed in Form-1 at an appropriate office along with First provisional/complete specification (in Form 2), accompanied with the Schedule prescribed fee as given in the First Schedule.

However, a provisional specification cannot be filed in case of Convention Application or PCT National Phase application filed in India.

Normal fee shall be applicable for applications containing up to 30 pages and up to 10 claims. If the application exceeds 30 pages or claims are more than 10 in number, additional fee, as given in the First Schedule, is payable.

It may be noted that 10% additional fee shall be payable when the application for patent and other documents are filed through physical mode, namely, in hard-copy format

Applicant

Section 16, 74. Rule 4, 5.

·    An application for a patent for an invention may be made by any of the following persons either alone or jointly with any other person:

–         True and first inventor

–         True and first inventor‗s assignee

–         Legal representative of any deceased true and first inventor or his/her assignee

·         The term “person” as defined in the Patents Act includes Government.

·         True and first inventor does not include either the first importer of an invention into India or a person to whom an invention is first communicated from outside India.

·         An applicant is required to disclose the name, address and nationality of the true and first inventor(s).

·         “Assignee” can be a natural person or legal person such as, a registered company, small entity, startup, research organization, an educational institute or the Government.

·         Assignee includes assignee of an assignee also.

·        Where the inventor(s) is/are not the applicant(s), a proof of right to apply for a patent shall be submitted by way of endorsement in the appropriate paragraph of Form-1 or as an assignment from inventor(s) in favour of applicant(s), duly authenticated, irrespective of whether the application is a Convention or National Phase application. It shall be filed within 6 months from the date of filing of the application in India.

·        “Natural person” means any individual or a group of individuals.

·         “Other than natural person” includes a registered company, small entity, startup, research organization, educational institute or Government.

·         “Legal representative” means a person who in law represents the estate of a deceased person. In such a case, the Legal Representative is required to file appropriate legal instruments as proof of right.

Procedure to be followed for substitution of applicants etc.

Section 6, 7(2) 54, 134, 135; Rule 10

Form-1

(1)(a) If the Controller is satisfied with the claim that, by virtue of any assignment or agreement in writing made by the applicant or one of the applicants for the patent or by operation of law, the claimant would, if the patent were then granted, be entitled thereto or to the interest of the applicant therein, or to an undivided share of the patent or of that interest, the Controller may direct that the application shall proceed in the name of the claimant or in the names of the claimants and the applicant or the other joint applicant or applicants accordingly, as the case may require.

Such a claim shall be made in Form 6 in the prescribed manner at any time before a grant of patent.

(b) No such direction as aforesaid shall be given by virtue of any assignment or agreement made by one of two or more joint applicants for a patent except with the consent of the other joint applicant or applicants.

(c ) The original assignment or agreement or an official copy or notarized copy thereof shall also be produced for the Controller’s inspection and the Controller may call for such other proof of title or written consent, as he may require.

(d) Further, the Controller shall not issue any such direction unless:

i. the invention is identified in the agreement or assignment by reference to the number of application for the patent, or
ii. there is an assignment/ agreement produced before the Controller by the person to whom it was made, indicating that the assignment or agreement relates to the invention in respect of which the application is made, or
iii. the rights of the claimant in respect of the invention have been finally established by decision of a court, or
iv. the Controller takes a decision after hearing the disputed parties as per the proceedings under section 20 (5) of the rules.

(2) Where one of two or more joint applicants for a patent dies at any time before the grant of patent, the Controller may, upon a request in that behalf made by the survivor or survivors, and with the consent of the legal representative of the deceased, direct that the application shall proceed in the name of the survivor or survivors alone.

Such request shall be made in Form 6 and shall be accompanied by proof of death of the joint applicant and a certified copy of the probate of the will of the deceased or letters of administration in respect of his estate or any other document to prove that the person who gives the consent is the legal representative of the deceased applicant.

(3) If any dispute arises between joint applicants for a patent as to whether or in what manner the application should be proceeded with, the Controller may, upon application made to him in the prescribed manner by any of the parties, and after giving an opportunity to be heard to all parties concerned, give such directions as he thinks fit for enabling the application to proceed in the name of one or more of the parties alone or for regulating the manner in which it should be proceeded with, or for both those purposes, as the case may require.

Such application shall be made in Form 6 in duplicate and shall be accompanied by a statement setting out fully the facts upon which the applicant relies and the directions which he seeks. A copy of the application and statement shall be sent by the Controller to every other joint applicant.

Jurisdiction

Unlike many other Countries, Indian Patent Office functions from four locations viz. Kolkata, Delhi, Chennai and Mumbai for carrying out all procedures relating to patents.

An application for patent shall be filed with the Patent Office having appropriate jurisdiction. A territorial jurisdiction of patent office in respect of a patent application is decided based on any of the following:

i. Place of residence, domicile or business of the applicant (first mentioned applicant in case of joint applicants) or,

ii. Place from where an invention actually originated or,

iii. Address for service in India given by the applicant, when the Applicant has no place of business or domicile in India (Foreign applicants).

iv. Also, the further application referred to in section 16 of the Act shall be filed at the appropriate office of the first mentioned application only.

Territorial jurisdictions are as under:

Section 16, 74. Rule 4, 5.

Territorial Jurisdiction

The States of Gujarat, Maharashtra, Madhya Pradesh, Goa, Chhattisgarh, the Union Territories of Daman & Diu and Dadra & Nagar Haveli

The  States  of  Haryana,  Himachal  Pradesh, , Punjab, Rajasthan,   Uttar   Pradesh,   Uttarakhand,   National Capital Territory of Delhi and the Union Territories of Chandigarh, Jammu and Kashmir, and Ladakh.

The  States  of  Andhra  Pradesh,  Karnataka,  Kerala, Tamil Nadu, Telangana and the Union Territories of Pondicherry and Lakshadweep.

Rest of India (States of Bihar, Jharkhand, Orissa, West Bengal, Sikkim, Assam, Meghalaya, Manipur, Tripura, Nagaland, Arunachal Pradesh and Union Territory of
Andaman and Nicobar Islands)

An appropriate office where a patent application is filed shall not be ordinarily changed.

However, the Controller may allocate an application for patent to any of the four Patent Offices, if required.

All applicants and patent agents are required to give an address for service including postal address in India, an email address and a mobile number registered in India.

Such address for service shall be considered for all proceedings under the Patents Act and Rules.

Refer: The Patents Act, 1970

Information relating to Patent Applications and Patents

Section 153. Rule 134

a. At the request of a person (on plain paper), the Controller provides the following information regarding a Patent or an Application for a Patent. Separate requests shall be made in respect of each item:

i. as to when a Complete Specification following Provisional Specification has been filed or an Application for Patent is deemed to be abandoned;

ii. as to when the information under Section 8 has been filed;

iii. as to when Publication of Application has been made under Section 11 A;

iv. as to when an Application has been withdrawn under Section 11B;

v. as to when a request for examination has been made under Section 11B;

vi. as to when the examination report has been issued under Section 12;

vii. as to when an Application for Patent has been refused;

viii. as to when a Patent has been granted;

ix. as to when a renewal fee has been paid;

x. as to when the term of a Patent has expired or shall expire;

xi. as to when an entry has been made in the Register or Application has been made for the making of such entry; or

xii. as to when any Application is made or action taken involving an entry in the Register, publication in the Official Journal or otherwise, if the nature of the Application or action is specified in the request.

b. The report of the Examiner to the Controller under Section 12 is not open to public unless directed by a Court of Law.

c. Except (b) above, most of the information relating to patents is available on the official website. However, the information available on the official website of the Patent Office would not be sufficient for legal proceedings, for which a person may take recourse to (a) above.